In a ruling with significant consequences for brands policing infringement outside of the U.S., a federal appeals court has held that email service on China-based defendants violates the Hague Service Convention – even in trademark counterfeiting cases where plaintiffs often seek swift injunctive relief against routinely-hard-to-reach online sellers. The decision from the U.S. Court of Appeals for the Second Circuit in a case over counterfeit Baby Shark merch cuts off a common enforcement shortcut used in marketplace-driven counterfeiting cases, narrowing the practical reach of court-ordered email service.
The Background in Brief: Smart Study Co., Ltd., the company behind Baby Shark, filed suit in the U.S. District Court for the Southern District of New York in July 2021 against dozens of China-based sellers selling through online marketplaces (including Amazon) that it alleged were offering counterfeit Baby Shark–branded products. The South Korean entertainment company secured a temporary restraining order and later a preliminary injunction against the defendants.
Although the court initially authorized service by email, that approach was later challenged after two defendants (YLILILY and Topivot) appeared and contested personal jurisdiction. Following extensive briefing, expert submissions, and the input of a court-appointed neutral advisor on Chinese law, SDNY Judge Gregory Woods concluded that email service violated the Hague Service Convention and dismissed the claims against the two remaining defendants without prejudice for failure to effect proper service.
The court denied Smart Study’s request for default judgment as to those defendants and dismissed the claims for lack of personal jurisdiction. Smart Study appealed, arguing that the district court misapplied the Hague Service Convention and improperly treated email service as categorically barred.
A Hard Line on Email Service
Affirming the district court’s decision, the Second Circuit stated in an opinion on December 18 that the Hague Service Convention creates a closed and exclusive framework for service of process abroad when it applies, and that it does not permit email service on defendants located in China. Because China has formally objected to the alternative service methods set out in Article 10 of the Convention, and because email service is not affirmatively authorized anywhere in the treaty, the court concluded that such service is prohibited – not merely unaddressed.
The Second Circuit panel rejected the view, adopted by some district courts, that the Convention’s silence leaves room for email service under Rule 4(f)(3). When the Convention applies, the court emphasized, it preempts all inconsistent methods of service. Allowing email service, the court reasoned, would undermine the Convention’s purpose by encouraging parties to bypass its carefully negotiated procedures in favor of faster and cheaper electronic alternatives.
The Second Circuit also declined to recognize any urgency-based exception for intellectual property cases. Rule 4(f)(3), it explained, authorizes only those methods of service not prohibited by international agreement and contains no carveout for exigent circumstances. Compliance with the Convention is mandatory, even where service may be slow, costly, or unlikely to succeed.
Finally, the Second Circuit rejected Smart Study’s attempt to invoke Article 15 of the Convention as a workaround for obtaining a default judgment, noting that Smart Study had not pursued service through Convention-approved channels and failed to show how entry of default judgment would qualify as a permissible provisional or protective measure under the treaty. Because service was improper, the district court lacked personal jurisdiction and correctly denied default judgment.
THE BIGGER PICTURE: For fashion, beauty, and consumer brands that routinely rely on ex parte injunctions and rapid defaults to disrupt online counterfeiting, the decision is a clear wake-up call. Email service has become a favored enforcement tool precisely because service through the Hague Convention in China can take months or even years – if it succeeds at all.
The Second Circuit’s ruling cuts off that shortcut where the Hague Service Convention applies, typically when a defendant’s physical address is known or reasonably ascertainable and significantly narrows the practical reach of Rule 4(f)(3). Courts, the Second Circuit made clear, are not free to devise alternative service methods simply because treaty-compliant service is slow or inconvenient.
The result may mean a meaningful increase in the cost and complexity of U.S.-based enforcement actions against China-based counterfeiters. As a result, brand owners may need to rethink their litigation strategies, whether by pursuing defendants more selectively, leaning more heavily on platform-based remedies, or committing to Hague Convention service despite the delays. More broadly, the ruling underscores a persistent tension in cross-border IP enforcement: global e-commerce operates at digital speed, while international service of process remains stubbornly analog. For now, at least in the Second Circuit, that gap is one rights holders will have to navigate.
The case is Smart Study Co., LTD v. Acuteye-US, 1:21-cv-05860 (SDNY).
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